Sandwich Boss Beats Hugo Boss in Trademark Showdown

“Il boss dei panini" has finally won the long legal battle to register its name as a trademark.

After nearly a decade-long legal battle, Il Boss dei Panini (aka “The Sandwich Boss”) has finally secured the right to register its name as a trademark.

The appeals commission ruled in favour of the street food business owner, dismissing concerns about potential confusion or association with the well-known fashion brand Hugo Boss. The appeals Commission for the Italian Patent and Trademark Office made its decision following a referral from the Supreme Court. In a 2023 ruling, the Court had upheld Hugo Boss's appeal, recognising the “strength” of its trademark.

How it all Started

In April 2016, the small Italian street food business filed an application to register "IL BOSS DEI PANINI" as an Italian trademark. After passing the formal examination phase conducted by the UIBM (Italian Patent and Trademark Office), the application faced opposition from a company affiliated with HUGO BOSS AG, a German multinational primarily active in the fashion and beauty sectors. The opposition was based on an existing European Union trademark registration for the name "BOSS".

The opposition was upheld by the UIBM, which rejected the trademark application. The office cited an overlap in services and the low distinctiveness of the latter trademark as reasons for its decision.

The Appeals Commission Steps In

In 2022, the appeals commission overturned the decision, accepting the appeal filed by the sandwich business and annulling the Opposition Division’s previous decision. The Commission reassessed the case and classified the earlier trademark "BOSS" as part of the broader category of so-called “weak” trademarks.

Weak trademarks refers to commonly used words that are more directly associated with the type of goods or services they represent. In this case, the Appeals Commission, highlighted that the word "BOSS" is widely used within the Italian language, often in humorous or informal contexts. The widespread use of this word played a key role in qualifying the prior trademark as weak.

Supreme Court Sends It Back

However, last year, the Supreme Court revisited the case, inviting the Appeals Commission to reassess the matter considering two fundamental issues previously excluded:

• That the trademark "BOSS" is of a patronymic nature (a surname-based trademark)
• That it is widely recognised, even if in different product sectors compared to those related to restaurant services in class 43.

Final Decision: Sandwich Boss Wins

Taking these points into account, the Appeals Commission issued a final ruling that marked the definitive victory of "The Sandwich Boss". It concluded that even after reassessing the case, the risk of confusion or association with the patronymic Hugo Boss trademark was minimal. The term “Boss,” when combined with the definite article and the phrase “dei panini” (of the sandwiches), has a distinct and unrelated meaning.

The ruling highlighted that although “Boss” could be in theory associated with the surname of the prior trademark, in this context (sandwiches), it clearly refers to someone in charge, a leader or “the best” in a particular area, and is often used humorously.

Therefore, the Commission ruled that the average consumer would not assume that the products of "Il boss dei panini" are linked to Hugo Boss or share the same business origin.

Images

Il Boss Dei Panini